Nominet uncovers CLUB 18-30 trademark infringement
In Thomas Cook UK Limited v Whitley Bay Uncovered, a Nominet.uk panel has overruled a first instance decision and ordered the cancellation of 'club1830uncovered.co.uk' and 'club18-30uncovered.co.uk'. The panel held that the domain names were confusingly similar to the complainant's famous trademarks and had been registered to take unfair advantage of the complainant's goodwill in the marks.
Thomas Cook owns various UK registered trademarks for CLUB 18-30 and has extensive goodwill and reputation in these marks. It brought a complaint under the Dispute Resolution Service Policy (DRSP), arguing that Whitley Bay's domain name registrations infringed its rights in the CLUB 18-30 marks and were abusive. Whitley Bay contended that, although it was not using the domain names at the time of the complaint, it had chosen them in good faith to host a website showing details of television documentaries about people between the ages of 18 and 30 (inclusive) who frequent night clubs.
At first instance, the appointed expert accepted Whitley Bay's arguments and held that the registrations would not be abusive even if the documentary programmes related to events organized by Thomas Cook. The expert reasoned that "to write an article about [an] event or to photograph or film the event would not be taking unfair advantage of the organizers of the event".
On appeal by Thomas Cook, the panel overruled the expert's decision and ordered the cancellation of 'club1830uncovered.co.uk' and 'club18-30uncovered.co.uk'. It held that, although Whitley Bay's reasons for registering the domain names did not fall within the list of circumstances providing evidence of abusive registration set out in the DRSP, the list is not exhaustive and the registrations were abusive. It reasoned that it was likely that Whitley Bay was aware of Thomas Cook's trademarks and registered the domain names with the intention of taking advantage of Thomas Cook's accrued goodwill in the marks. The panel concluded that, even if Whitley Bay displayed disclaimers on its website, the proposed use would still give rise to the suggestion that there was some kind of connection with Thomas Cook. This, ruled the panel, would take unfair advantage of, or be unfairly detrimental to, Thomas Cook's trademark rights.
The panel did not accept Thomas Cook's submissions that it had rights in the term 'club18-30 uncovered' and accordingly declined to order the transfer of the domain names.
Cameron Thompson, Ashurst Morris Crisp, London
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